优赛诺 USino：您身边的知识产权解决方案专家

Real World US IP/Patent Practice Webinar Series

（美国专利实务培训课纲）

Lect. 1: How a Strategic IP/Patent Portfolio Can Be Powerful for

Business Success (2hrs)
By case showing how a strategic IP/Patent portfolio can be powerful for business success.

It would be very interesting and attractive if a real world example can be shared which

demonstrates the portfolio built from scratch and lead to business success in the end

(either by becoming a successful business, or being acquired by some other company or

even by litigating and receiving a big damage).

The most important thing is to let people know that a planned IP/Patent portfolio strategy is

critical to business successes.

Lect. 2: US Patent System - the Uniques, Part I (2hrs)

After a quick introduction to the overall of the US patent system, this part I section of the

US Patent System Uniques focuses on the special types of patent applications. Of special

importance are the Provisional Application and both successful and failed real world cases

that teach stakeholders about the unique strategic benefits of provisional applications.

Lect. 3: US Patent System - the Uniques, Part II (2hrs)

This part II section of the US Patent System Uniques is kind of continued part of the earlier

one. This section would focus on the concept of Continuation Application (CP & CIP). Both

successful and failed real world cases that teach stakeholders about the unique strategic

benefits of Continuation Application are expected.

Lect. 4: US Patent System - the Uniques, Part III (2hrs)

This section of the US Patent System Uniques deals with special procedures such as

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AFCP 2.0, Amendment After Final & Advisory Action, RCE, XPR, IPR, PGR, CBM and

other procedures. Both successful and failed real world cases that utilize those procedures

from either the patentee or the challenger perspective to their benefits would be expected.

Pitfalls are worth warning.

Lect. 5: US Patent System - the Uniques, Part IV (2hrs)

This section of the US Patent System Uniques deals with design patent and PCT. Both

successful and failed real world cases that follow and didn’t follow certain special

U.S.-rules are worth sharing and would be helpful for stakeholders seeking to leverage

design patent and PCT applications.

Lect. 6: Patentability - Eligible Subject matter (2hrs)

This course of eligible subject matter is mainly about 35 U.S.C. 101. After pertaining rules

and backgrounds thereof are explained, both successful and failed real world cases are to

be introduced, the former one showing the audience how the 35 U.S.C. 101 problem is

defeated while the latter showing the contrary.

Lect. 7: Writing Specification (2hrs)

The course teaches the tips and tricks of specification drafting. Use real world cases to

teach the audience how to define the invention completely with alternatives and variations,

with particular care to identify the improvements that will contribute to patentability,

avoiding common mistakes that will unnecessarily limit the scope of protection. Successful

and failed real world cases, which describe what matters and not sounding like an

infomercial, whose Detailed Description of the Invention hit the happy medium between

being specific and nuance while maintaining breadth, are highly recommended.

Lect. 8: Claim Interpretation (2hrs)

This section is an overview of Claim Interpretation including: in both examiner and

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applicant's points of view of claim interpretation and why it is important, the definition of

terms, preambles, functional limitations, statements of intended use, “whereby” clauses,

and product-by-process claims. All demonstrated with real world cases which bring good

returns or big loss for stakeholders.

Lect. 9: Claim Drafting 101 (2hrs)

Bearing the rules of Claim Interpretation in mind, the lecturer shares with the audience the

basic claim drafting techniques for a variety of different types of claims, including device,

method, means plus function and system claims. Again, real world good & bad cases are

expected.

Lect. 10: How to write an amendment with persuasive arguments

(2hrs)
This course helps the audience appreciate what is effective response to an Examiner’s

office action following a First Action on the Merits (FAOM) or Final Action. Quality OAs

should be evaluated for completeness as well as technical and procedural accuracy and

winning expected results for the applicant. Both successful and failed real world cases are

to be presented.

Lect. 11: Interview Practice (2hrs)

This section focuses on how to make best use of interview practice during prosecution,

including: when an interview may be held, who may participate, and how an interview

should be conducted and documented in a strategic way. Both successful and failed real

world cases will be helpful.

Lect. 12: Other miscellaneous topics (2hrs)

This miscellaneous topic section discusses themes such as accelerated examination, PTE,

IDS (during prosecution, after grant and before litigation etc.), FFL and fee topics. Both

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successful and failed real world cases are expected. For example, a good case that

leverages the PTE earns great returns for the patentee (a drug patent that fights for an

even several days PTE to make remarkable profits from drug selling) while a bad case

may be one that did not get the FFL right and got in trouble later.

讲师团基本构成：

原任或现任中国/美国专利审查员、原任或现任资深企业 IPR、原任

或现任法官/律师、原任或现任法学院教授、原任或现任资深专利代理师。

讲师团成员平均具备 10 年+知识产权（专利）从业经历、硕士+学历、

副研究员（或等同）以上职称。

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